USPTO Patents Application 10561839

PATENT COOPERATION TREATY

From the

INTERNATIONAL SEARCHING AUTHORITY

To:

see form PCTASA/220

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

(PCT Rule 436/S.1)

Date of mailing

(dayAnonthyear) see form PCT4SA/210 (second sheet)

Applicant's or agent's file reference

see form PCT/ISA/220

FOR FURTHER ACTION

See paragraph 2 below

International application No.
PCT/1L2005/000801

International filing date (dayAnonthyear)
26.07.2005

Priority date (dayAnonthyear)
25.01.2005

Internationa) Patent Classification (IPC) or both national classification and IPC
B01J19/00, B01L3/00, G01N33/48

Applicant

MOLECULAR CYTOMICS LTD.

Box No.

I

Box No.

II

□

Box No.

III

□

Box No.

IV

Box No.

V

□

Box No.

VI

Box No.

VII

Box No.

VIM

This opinion contains indications relating to the following items:

Basis of the opinion
Priority

Non-establishment of opinion with regard to novelty, inventive step and industrial applicability
Lack of unity of invention

Reasoned statement under Rule 43b/s.1 (a)(i) with regard to novelty, inventive step or industrial
applicability; citations and explanations supporting such statement

Certain documents cited

Certain defects in the international application

Certain observations on the international application

2. FURTHER ACTION

If a demand for international preliminary examination is made, this opinion will usually be considered to be a
written opinion of the International Preliminary Examining Authority ("IPEA"). However, this does not apply where
the applicant chooses an Authority other than this one to be the I PEA and the chosen IPEA has notifed the
International Bureau under Rule 66.1b/s(b) that written opinions of this International Searching Authority
will not be so considered.

If this opinion is, as provided above, considered to be a written opinion of the IPEA, the applicant is invited to
submit to the IPEA a written reply together, where appropriate, with amendments, before the expiration of three
months from the date of mailing of Form PCT>iSA£20 or before the expiration of 22 months from the priority date,
whichever expires later.

For further options, see Form PCT/lSAy220.

3. For further details, see notes to Form PCT/ISA520.

Name and n

laifing address of the ISA:

Authorized Officer

(3)

J

European Patent Office
D-80298 Munich

Tel. +49 89 2399 - 0 Tx: 523656 epmu d
Fax: +49 89 2399 - 44S5

Oenhausen, C

Telephone No. +49 89 2399-2067

Form (PCTASAG37) (Cover Sheet) (January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

International application No.
PCT/1L2005>000801

Box No. I Basis of the opinion

1. With regard to the language, this opinion has been established on the basis of the international application in
the language in which it was filed, unless otherwise indicated under this item.

□ This opinion has been established on the basis of a translation from the original language into the following
language , which is the language of a translation furnished for the purposes of international search
(under Rules 12.3 and 23.1 (b)).

2. With regard to any nucleotide andfor amino acid sequence disclosed in the international application and
necessary to the claimed invention, this opinion has been established on the basis of:

a. type of material:

□ a sequence listing

□ table(s) related to the sequence listing

b. format of material:

□ in written format

□ in computer readable form

c. time of filing/furnishing:

□ contained in the international application as filed.

□ filed together with the international application in computer readable form.

□ furnished subsequently to this Authority for the purposes of search.

3. □ In addition, in the case that more than one version or copy of a sequence listing andfor table relating thereto

has been filed or furnished, the required statements that the information in the subsequent or additional
copies is identical to that in the application as filed or does not go beyond the application as filed, as
appropriate, were furnished.

4. Additional comments:

Box No. 11 Priority

1. E The validity of the priority claim has not been considered because the International Searching Authority

does not have in its possession a copy of the earlier application whose priority has been claimed or, where
required, a translation of that earlier application. This opinion has nevertheless been established on the
assumption that the relevant date (Rules 43b/s.1 and 64.1) is the claimed priority date.

2. □ This opinion has been established as if no priority had been claimed due to the fact that the priority claim

has been found invalid (Rules 43bisA and 64.1). Thus for the purposes of this opinion, the international
filing date indicated above is considered to be the relevant date.

3. Additional observations, if necessary:

Form PCT/iSA/237 (January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING AUTHORITY

International application No.
PCT/!L2005y000801

Box No. V Reasoned statement under Rule 43i>/s.1(a)(i) with regard to novelty, inventive step or
industrial applicability; citations and explanations supporting such statement

1. Statement

Novelty (N) Yes: Claims

No: Claims 1-37

Inventive step (IS) Yes: Claims

No: Claims 1-37

Industrial applicability (IA) Yes: Claims 1-37

No: Claims

2. Citations and explanations
see separate sheet

Box No. VII Certain detects in the international application

The following defects in the form or contents of the international application have been noted:
see separate sheet

Box No. VII) Certain observations on the international application

The following observations on the clarity of the claims, description, and drawings or on the question whether the
claims are fully supported by the description, are made:

see separate sheet

Form PCTMSA/237 (January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING
AUTHORITY (SEPARATE SHEET)

Internationa! application No.
PCT/IL2005/000801

Re Item V.

1 . INDEPENDENT CLAIMS 1 , 9, 15 AND 32

The present application does not meet the criteria of Article 33(1) PCT, because the
subject-matter of claims 1 -37 is not new in the sense of Article 33(2) PCT. At the
current stage of the proceedings, reference is made in particularly to the following:

1 .1 Document D1 (WO-A-2004/1 1 3492, Applicant's own disclosure) describes a
chip-device (a "picowell bearing device") having any array of wells being suitable for
capturing a single cell to each well. Furthermore, fluid channels and a cover slip are
disclosed (see in particularly claims 1 , 75, 76, 79, 81 , 88 and 1 05). D1 takes away the
novelty of the independent claims 1 , 9 and 1 5.

1 .2 Document D2 (WO-A-01 /35071 , Applicant's own disclosure) describes a cell sorting
apparatus having the features of the present claims 1 , 9 and 1 5 (see D2, in
particularly claims 1-8, description page 26 line 16ff). D2 therefore deprives these
present independent claims of novelty.

1 .3 Document D3 (WO- A- 03/056330) discloses a cell sorting device comprising a carrier
with arrays, micro channels, a cover on top of the array and a fluid dispenser (page 7
line 14 to page 12 line 1 9, figures 1-3, claims). The disclosure of D3 takes away the
novelty of the independent claims 1 , 9, 1 5 and 32. In respect of the at present
unspecified automatic control system in claim 32 (see § 1 .4 above), it is pointed out
that the cell stream is automatically controlled via a magnetic or electric field
according to D3 (page 1 2 § 3).

1 .4 D4 (WO-A-02/261 1 4) describes a cellular array in communication with micro
channels, a cover and a dispensing means, the flow being controlled (page 6 line 3 to
page 10 line 6, claims, figures). D4 renders the subject matter of the independent
claims 1 , 9 and 1 5 not novel.

1 .5 According to D5 (US-A-6,377,721 ) a device for studying individual cells is known,
said device comprising a carrier with microwells and micro channels. D5 therefore
takes away the novelty of the independent claims 1 and 9.

Form PCT/ISA/237 (Separate Sheet) (Sheet 1) (EPO January 2004)

WRITTEN OPINION OF THE international application No.

INTERNATIONAL SEARCHING

AUTHORITY (SEPARATE SHEET) PCT/1L2005/000801

1 .6 In D6 (WO-A-03/01 1451 ) a device for studying individual cells is disclosed, which
comprises the features of the independent claim 1 (see page 7 line 3 to page 11 § 1,
page 17 § 3 to page 18 § 2 and the figures). The subject-matter claimed by the
present claim 1 is therefore not novel.

1 .7 D7 (WO-A-063034) describes an automated system for loading individual cells into
discrete locations for study. This document discloses the features of the present
independent claims 1 , 9, 1 5 and 32 except for the lid as described by claims 9, 15
and 32 (see in particularly page 13 line 5 to page 15 line 27, page 17 line 8-19). D7
therefore deprives the independent claim 1 of novelty and the remaining tndependet
claims 9, 1 5 and 32 of inventive step, since the addition of a lid, which is a s such
described in several of the documents cited in this procedure, does not represent an
unexpected effect to the skilled person.

2. DEPENDENT CLAIMS 2-8, 10-14, 16-31 , and 33-37

Dependent claims 2-8, 1 0-1 4, 1 6-31 , 33-37 do not contain any features which, in
combination with the features of any claim to which they refer, meet the requirements
of the PCT in respect of novelty and/or inventive step (Article 33(2) and (3) PCT).

Form PCT/lSA/237 (Separate Sheet) (Sheet 2) (EPO-January2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING
AUTHORITY (SEPARATE SHEET)

Re Item VII.

International application No.
PCT/IL2005/000801

1 The independent claims are not in the two-part form in accordance with Rule 6.3(b)
PCT, which in the present case would be appropriate, with those features known in
combi nation from the prior art to be placed in the preamble (Rule 6.3(b)(1) PCT) and
with the remain ing features to be included in the characteris ing part (Rule 6.3(b)(ii)
PCT).

2 The Applicant's attention is drawn to the fact that the reference to the prior art
IL04/00192 in the description (for example on pages 6-8, 21 , 31 and 38) is incorrect.
He is requested to verify whether IL04/00194 is intended.

3 Contrary to the requirements of Rule 5.1 (a)(ii) PCT, the relevant background art
disclosed in the documents D3-D7 is not mentioned in the description, nor are these
documents identified therein.

Form PCT/1SA/237 (Separate Sheet) (Sheet 3) (EPO-January 2004)

WRITTEN OPINION OF THE
INTERNATIONAL SEARCHING
AUTHORITY (SEPARATE SHE!

Re Item vill.

International application No.
PCT/ll_2005/0008m

The application does not meet the requirements of Article 6 PCT, because the
independent claims 1 , 9,. 15 and 32 are not clear. Said Cairns refer to a "picowel.

dLb?L d f e T h0W6Ver t6rm " PiC0We "" is unc,ear and teave * the reader"'
doubt as to the mean.ng of the technical feature to which it refers. Nevertheless

ohvS 9 \ 6 deS r iPti ° n ^ 3 ' ine 16 - 17) ' "P icowe11 " -compasses aN known
phys,cal variations of microwells. Moreover, the term "picowell" has no

well-recognised meaning and for that reason also leaves the reader in doubt as to the
meaning of the technical feature to which it refers.

rlV d T ^ SC ° Pe ° f the C,alm by " C0 ^istin g essentially of no more than four

statements n the descnption on page 16 (line 22-27) and page 39 (line 28) to pace
40 0<ne 1 1 ) imply that the subject-matter for which protection* sought may be
d.ffe ent to that defined by the claims, thereby resulting in lack of clarity (Article 6
PCT) when used to interpret them.

^Z 9 h th ? i ? dependent c,aims 1 • 9. 1 5 and 32 have been drafted as separate
"dependent alarms, they appear to relate effectively to the same subject-matter and

wh^n ? m t eaCh ° th6r ° n,y Wlth re9ard t0 the definition <* *e subject matter for
which protection ,s sought. The aforementioned claims therefore lack condseness
and as such do not meet the requirements of Article 6 PCT. conc,sen ^s

The terms "functionally associated" and "substantially automatically" in the

hP t h ? , ? T 32 V39Ue ' eaVe the reader in doubt as * ^e meaning of
he technical feature to which it refers. The independent claim 32 furthermore reins

and Z th^ r "T* * ~ "* fUrther Speclf,ed in terms * ^at to contro.
fpnrlT „ ? P Cat, ° n theref0fe d ° eS n0t meet the ^'rements of Article 6 PCT
(For the sake of completeness, the Applicant's attention is also drawn to the clerical '
error "auomatically" in claim 32, last line).

PCT/lSA/237 (Separate Sheet) (Sheet 4) (EPO-January 2004)